DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments received 04/06/2026 with respect to the rejection under 35 USC 101 have been considered but are moot in view of the new ground(s) of rejection. Detailed response is given in sections 3-4 as set forth below in this Office action.
Applicant's arguments regarding the rejection under 35 USC 102 in reference to the amended claims are deemed persuasive. The corresponding rejection is therefore withdrawn.
Claim Rejections - 35 USC § 101
3. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 101 that form the basis for the rejections under this section made in this Office action:
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
4. Claims 1-4 and 6-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Under the 2019 PEG (now been incorporated into MPEP 2106), the revised procedure for determining whether a claim is "directed to" a judicial exception requires a two-prong inquiry into whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.0S(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Claims 1-4 and 6-13 are directed to an abstract idea of providing an instruction of playing music.
Specifically, representative claim 1 recites:
An electronic instrument comprising:
a sound source;
at least one hardware processor configured to execute processes comprising:
selecting a voicing pattern, from among plural voicing patterns, based on a scale decided according to a tune and chords of a music piece, with a probability corresponding to a combination of a number of sounds to be emitted and a decided voicing type, wherein each of the plural voicing patterns includes a voice group different from a voice group of others of the plural voicing patterns; and
instructing the sound source to emit a chord voiced based on the selected voicing pattern, whereby the sound source performs an automatic chord accompaniment based on the instruction of the chord emission.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
The highlighted portion of the claim constitutes an abstract idea under the 2019 Revised Patent Subject Matter Eligibility Guidance and the additional elements are NOT sufficient to amount to significantly more than the judicial exceptions, as analyzed below:
Step
Analysis
1. Statutory Category ?
Yes.
Device/Apparatus
2A - Prong 1: Judicial Exception Recited?
Yes.
See the bolded portion listed above.
Under the broadest reasonable interpretation (BRI), the limitation “selecting …” recited in the bolded portion encompasses a mental process, i.e. data manipulation, evaluation and judgment, that can be performed in the human mind or by a human using a pen and paper. The recited attributes of a music piece are merely data characterization for practicing the data manipulation, evaluation and judgment of the claimed mental process which can be viewed as nothing more than an attempt to generally link the use of the abstract idea to the relevant technological environment or field of use.
Nothing in the bolded portion precludes the claimed mental process from practically being performed in the mind and/or with the aid of pen/paper. Note, the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). See also to MPEP 2106.04(a)(2).III
Therefore, the bolded portion falls within the mental process Grouping of Abstract Ideas under the 2019 PEG because it covers concepts performed in the human mind, including observation, evaluation, judgment, and opinion.
2A - Prong 2: Integrated into a Practical Application?
No.
The claim is merely selecting data, manipulating or analyzing the data using mental process, and outputting the results.
The limitations of “a sound source” and “at least one hardware processor” are all recited a high level of generality. Under the BRI, they encompass a general-purpose computer including hardware or software components that are configured to produce audio signals by generating or playing back waveforms, those hardware or software components can be built into a sound card, run as a program, or be a dedicated external device such as a loudspeaker. According to the MPEP 2106.04(a)(2), if a claim limitation, under its broadest reasonable interpretation, covers mental processes except for the mention of generic computer components performing computing activities via basic function of the computer, then the claim is likely considered to be directed to an ineligible abstract idea, as it essentially describes a mental process that could be performed by a human without the computer components adding any significant practical application beyond the abstract concept itself. See also Whitserve LLC v. Dropbox, Inc.
The claim recites the additional element “instructing the sound source to emit a chord voiced based on the selected voicing pattern, whereby the sound source performs an automatic chord accompaniment based on the instruction of the chord emission”. Under the BRI, this additional limitation encompasses an insignificant extra-solution activity and/or a field of use limitation generally attached to the identified judicial exception. Furthermore, the claim does not specify with respect to what reference music the “chord accompaniment” is defined and performed. As such, the additional limitation of instructing the sound source to generate “chord emission” does not qualify as to be significantly more to integrate the recited judicial exception into a practical application. It amounts to no more than mere instructions to apply the exception using a generic computer component or post-solution activities which can be viewed as an attempt to link the use of the judicial exception to the relevant technological environment or field of use. See MPEP 2106.04(d) and 2106.05(g).
In general, the claim as a whole does not meet any of the following criteria to integrate the abstract idea into a practical application:
An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Various considerations are used to determine whether the additional elements are sufficient to integrate the abstract idea into a practical application. However, in all of these respects, the claim fails to recite additional elements which might possibly integrate the claim into a particular practical application. Instead, based on the above considerations, the claim would tend to monopolize the algorithm across a wide range of applications.
2B: Claim provides an Inventive Concept?
No.
Focusing on what the inventors have invented exactly, it is deemed that the “heart” of the representative claim 1 is directed to an abstract algorithm of providing an instruction of playing music. As discussed with respect to Step 2A Prong Two above, the claim does not include any additional element to impose meaningful limits on practicing the abstract idea to integrate the identified abstract idea into a practical application. Furthermore, using a general-purpose computer and related hardware/software components to perform data manipulation and/or produce audio signals — such as tones, noise, or complex sounds — by generating or playing back waveforms with basic computing functionality of the general-purpose computer are all well-known/conventional (see the prior art cited in the previous Office action). The claim does not recite any additional limitation/element that reflects an “inventive concept”. See MPEP 2106.05.
The claim is therefore ineligible under 35 USC 101.
The dependent claims 2-4 inherit attributes of the independent claim 1, but do not add anything which would render the claimed invention a patent eligible application of the abstract idea. These claims merely extend (or narrow) the abstract idea which do not amount for "significant more" because they merely add details to the algorithm which forms the abstract idea as discussed above.
Claims 6-13 are rejected under 35 USC for the same reasons as for claims 1-4 set forth above.
Examiner’s Note
5. Claims 1-4 and 6-13 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 101 as set forth above in this Office action.
Conclusion
6. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Contact Information
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANCHUN QIN whose telephone number is (571)272-5981. The examiner can normally be reached 9AM-5:30PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dedei Hammond can be reached at (571)270-7938. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANCHUN QIN/Primary Examiner, Art Unit 2837
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